Patent and Trademark Office July 10, 2006 – Federal Register Recent Federal Regulation Documents

The United States Patent and Trademark Office (Office) is proposing changes to information disclosure statement (IDS) requirements and other related matters to improve the quality and efficiency of the examination process. The proposed changes will enable the examiner to focus on the relevant portions of submitted information at the very beginning of the examination process, give higher quality first actions, and minimize wasted steps. The Office is proposing the following changes relating to submissions of IDSs by applicants/patent owners: Before a first Office action on the merits, require additional disclosure for English language documents over twenty-five pages, for any foreign language documents, or if more than twenty documents are submitted, but documents submitted in reply to a requirement for information or resulting from a foreign search or examination report would not count towards the twenty document limit; permit the filing of an IDS after a first Office action on the merits only if certain additional disclosure requirements have been met; and eliminate the fees for submitting an IDS. Updates to the additional disclosure requirements would be required as needed for every substantive amendment. The Office is also proposing to revise the protest rule to better set forth options that applicants have for dealing with unsolicited information received from third parties.